Sorgev.Kawashima et al.

Patent Trial and Appeal Board

Feb 14, 2017

13886234 (P.T.A.B. Feb. 14, 2017)

BoxInterferences@uspto.gov Entered: February 14, 2017
Tel: 571-272-9797

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

JOSEPH A. SORGE,
Junior Party,
(Patent 8,263,338)

v.

ERIC H. KAWASHIMA,
LAURENT FARINELLI, and PASCAL MAYER,
Senior Party,
(Application 13/886,234)

Patent Interference No. 106,020
(Technology Center 1600)

Before: RICHARD E. SCHAFER, SALLY GARDNER LANE, and
DEBORAH KATZ, Administrative Patent Judges.

LANE, Administrative Patent Judge.

Judgment - Bd.R. 127(a)

2

In view of the Decision on Priority and other Motions (Paper 175), it is 1
ORDERED that judgment on priority as to Count 1 (Declaration 2
(Paper 1, p.4), the sole count of the interference, is entered against junior party 3
JOSEPH A. SORGE; 4
FURTHER ORDERED that claims 1-28 of junior party patent 5
8,263,338 which claims correspond to Count 1, are CANCELLED; 35 U.S.C. 6
§ 135(a);1 7
FURTHER ORDERED that the parties are directed to 35 U.S.C. 8
§ 135(c) and to Bd. R. 205 regarding the filing of settlement agreements; 9
FURTHER ORDERED that a copy of this judgment shall be entered 10
into the administrative record of the involved junior party patent and the involved 11
senior party application; and 12
FURTHER ORDERED that a party seeking judicial review timely 13
serve notice on the Director of the United States Patent and Trademark Office; 14
37 C.F.R. §§ 90.1 and 104.2. See also Bd. R. 8(b). Attention is directed to Biogen 15
Idec MA, Inc., v. Japanese Foundation for Cancer Research, 785 F.3d 648, 16
654–57 (Fed. Cir. 2015) (determining that pre-AIA § 146 review was eliminated 17
for interference proceedings declared after September 15, 2012). 18

1 Any reference to a statute is to statute that was in effect on
March 15, 2013 unless otherwise indicated. See Pub. L. 112-29, § 3(n), 125 Stat.
284, 293 (2011).
3

cc (via e-mail):

Attorney for Sorge:

Daniel A. Lev
dlev@pierceatwood.com

Gary A. Walpert
gwalpert@pierceatwood.com

Attorney for Kawashima:

Brenton R. Babcock
2brb@knobbe.com

Brendon Gingrich
2bsg@knobbe.com

David P. Kujawa
2dpk@knobbe.com
boxILM@knobbe.com

Edward R. Reines
Edward.reines@weil.com

BoxInterferences@uspto.gov Entered: February 14, 2017
Tel: 571-272-979

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

JOSEPH A. SORGE,
Junior Party,
(Patent 8,263,338)

v.

ERIC H. KAWASHIMA,
LAURENT FARINELLI, and PASCAL MAYER,
Senior Party,
(Application 13/886,234)

Patent Interference No. 106,020
(Technology Center 1600)

Before RICHARD E. SCHAFER, SALLY GARDNER LANE, AND
DEBORAH KATZ, Administrative Patent Judges.

LANE, Administrative Patent Judge.

Decision – Priority and Other Motions – Bd. R. 121(a)

Interference 106,020

2

I. Introduction 1
We have before us for decision two substantive motions from junior party 2
Sorge. (Sorge Motion 1, Paper 44 and Sorge Motion 2, Paper 52). 1 Sorge 3
Motion 1 seeks to change the priority benefit accorded to Kawashima and Sorge 4
Motion 2 seeks to change the correspondence of claims to the Count. See 5
Bd. R. 208(a) (3) and (2), respectively. Kawashima filed an opposition to each of 6
the two Sorge Motions. (Kawashima Opposition 1, Paper 96 and Kawashima 7
Opposition 2, Paper 98) and Sorge filed a reply to each opposition. (Sorge 8
Reply 1, Paper 149 and Sorge Reply 2, Paper 168). Kawashima was authorized to 9
file (Order, Paper 159), and did file, a surreply to each Sorge reply as well as 10
responses to material facts presented in the Sorge replies. (Kawashima Surreply 1, 11
Paper 161 and Kawashima Surreply 2, Paper 162, and Kawashima Responses, 12
Paper 160). 13
In addition Sorge filed a motion seeking the exclusion of certain evidence 14
relied upon in the Kawashima oppositions. (Sorge Motion to Exclude, Paper 156). 15
Kawashima opposed (Kawashima Opposition to Motion to Exclude, Paper 163) 16
and Sorge replied. (Sorge Reply to Kawashima Opposition to Motion to Exclude, 17
Paper 164). 18
We deny the Sorge motion to change accorded benefit and the Sorge motion 19
seeking a change in claim correspondence. We dismiss as moot the Sorge motion 20
seeking the exclusion of evidence. Sorge has conceded that if Sorge Motion 1 is 21

1 The parties’ requests for oral argument were considered but the Board has
determined that no oral argument is necessary. (Kawashima Request, Paper 154
and Sorge Request, Paper 155).
Interference 106,020

3

not granted Sorge cannot prevail on priority. (Order Setting Times, Paper 26, p. 3). 1
We enter judgment on priority against Sorge in a separate paper. 2
II. Findings of fact 3
The record supports the following findings of fact, as well as the other 4
findings of fact set forth elsewhere in this decision, by a preponderance of the 5
evidence. 6
Parties 7
1. Junior party Sorge is involved in the interference on the basis of its 8
patent 8,263,338 (’338), issued 11 September 2012, from application 11/786,204, 9
filed 11 April 2007. (Declaration, Paper 1). 10
2. Sorge indicates that its real party in interest is Catalyst Assets, LLC. 11
(Real Party Notice, Paper 4). 12
3. Senior party Kawashima is involved in the interference on the basis of 13
its application 13/886,234 (’234), filed 02 May 2013. (Declaration, Paper 1). 14
4. Kawashima indicates that its real party in interest is Illumina, Inc., and 15
its wholly owned subsidiary Illumina Cambridge Limited. (Real Party Notice, 16
Paper 8). 17
Count 18
5. The Count, Count 1, is claim 1 of the Sorge involved patent or claim 19
16 of the Kashima involved application, each of which reads: 20
Interference 106,020

4

A process to identify in a nucleic acid sample the presence or absence of a 1
nucleic add[2]sequence difference with respect to a reference sequence, the process 2
comprising: 3
4
a) fragmenting nucleic acids in said sample; 5
6
b) linking adapter sequences to the nucleic acid fragments generated in 7
step a; 8
9
c) binding said nucleic acid fragments to a solid support by hybridizing the 10
adapter sequences to complementary oligonucleotides attached to said solid 11
support to form bound nucleic acid fragments, and amplifying said bound nucleic 12
acid fragments to produce bound and amplified fragments, whereby there is 13
enrichment of subsets of the nucleic acid fragments; and 14
15
d) identifying the presence or absence of nucleic acid sequence differences 16
within said bound and amplified fragments with respect to the reference sequence 17
by hybridizing sequencing primers to the bound and amplified fragments and 18
extending the sequencing primers. 19
20
(emphasis added, Declaration, Paper 1, p. 4; Kawashima Clean Copy of Claims, 21
Paper 11; Sorge involved patent, Ex. 2008). 22
23
6. The following claims are designated as corresponding to Count 1: 24
Sorge: 1-28 25

2 The claims comprising the Count each contain a typographical error in that
“add” should be “acid”. The Board earlier indicated that, “[f]or purposes of this
proceeding the Board will consider that the claims read “acid” [and that] [a]fter the
interference proceeding has concluded each party may take action, if appropriate,
to correct to its involved patent or application.” (Order Setting Times, Paper 26,
p.6).

Interference 106,020

5

Kawashima: 2-27. 1
(Declaration, Paper 1, p. 4). 2
7. According to the Sorge involved specification: 3
As used herein, the term “enrichment” or “enrichment of genetic markers” 4
refers to the result of any process which increases the concentration of any 5
particular nucleic acid sequence (genetic marker) relative to some other 6
nucleic acid sequence as compared to a sample not subjected to the process. 7
As used herein, a nucleic acid sample is considered to be enriched for a 8
particular marker if the marker is in greater concentration relative to the 9
average concentration of all markers than in a sample which has not been 10
subjected to an enrichment process; for example, where the marker is 11
present in the enriched sample at a concentration 5-fold greater than in the 12
unenriched sample. 13
14
(‘338 Patent, Ex. 2008, 13:31-42). 15
16
8. According to the Sorge involved specification: 17
As used herein, the term “subset of fragments” or “subset of 18
molecules” refers to that fraction of a population of nucleic acid 19
fragments, less than every molecule in the population, having a given 20
characteristic (e.g., having ends capable of annealing to a particular 21
linker or primer, or having a particular average length). 22
23
(‘338 Patent, Ex. 2008, 14:4-9). 24
9. Neither the specification of the involved Kawashima application nor 25
the specifications of the Kawashima benefit applications explicitly use the term 26
“enrichment” or the phrase “enrichment of subsets of the nucleic acid fragments”. 27
Benefit and priority 28
10. The parties were accorded benefit of the following applications: 29
Interference 106,020

6

Sorge 1
2
US 10/391,090, filed 18 March 2003, now patent 8,383,343 3
US 09/338,855, filed 23 June 1999 4
5
Kawashima 6
7
US 13/828,047, filed 14 March 2013, 8
9
US 12/148,133, filed 16 April 2008, 10
now patent 8,476,044 11
12
US 10/449,010, filed 02 June 2003, 13
now patent 7,985,565 14
15
US 09/402,277, filed 30 September 1999 16
17
PCT/GB98/00961, filed 01 April 1998 (published as WO9844151 on 18
8 October 1998) 19
20
UK 9713236.9, filed 23 June 1997 21
22
UK 9713238.5, filed 23 June 1997 23
24
UK 9706528.8, filed 01 April 1997 25
26
UK 9706529.6, filed 01 April 1997. 27
28
(Declaration, Paper 1, p.5). 29
11. In its priority statement Sorge alleges an earliest corroborated 30
conception date of 9 May 1997. (Sorge Priority Statement, Paper 50, p.1). 31
Related proceedings 32
12. The same parties are involved in related interference 106,019. 33
Interference 106,020

7

13. Interference 106,019 involves Sorge patent 8,383,343 and the same 1
Kawashima application as is involved here. (106,019, Declaration, Paper 1). 2
14. The Count in this interference differs from the 106,019 Count in at 3
least that the present Count includes the phrase “whereby there is enrichment of 4
subsets of the nucleic acid fragments” with reference to the amplifying of step c). 5
15. Prior to the declaration of this interference, Sorge requested 6
reexamination of its involved patent and the patent involved in 106,019. (Sorge 7
Notice of Related Proceedings, Paper 5 and in Interference 106,019 Sorge Notice 8
of Related Proceedings, Paper 5). 9
16. In the request for its patent involved in this interference, Sorge asked 10
for reexamination of its involved claims 1, 2 and 11-14 over Kawashima published 11
benefit application WO98/44151 (Kawashima Publication) on the basis that the 12
Kawashima Publication “discloses, expressly or inherently all elements of the 13
claims…”. (Request for Reexamination, Ex. 2036, p. 2). 14
17. In the request Sorge acknowledged that: 15
Figs. 17-19 and the related description at pp. 64-69 depicts generating 16
solid-support bound arrays which are amplified on a solid support 17
from secondary sequences, and only certain subsets of the nucleic acid 18
fragments in the sample are in the arrays (such that there is 19
“enrichment of subsets”). 20
21
(Request for Reexamination, Ex. 2036, p. 4). 22
18. The Request for Reexamination was granted (See Paper entered in 23
90/020,080 on 1 April 2015, Reexamination Grant, Ex. 1010) but the 24
reexamination proceeding was suspended after its grant pursuant to an Order by 25
Interference 106,020

8

the Board. (See Paper entered in the application on 7 April 2015, Ex. 1010, and 1
Board Order, Paper 13)3. 2
19. Relying on testimony that is further discussed below, Sorge now 3
argues it was incorrect in its Request for Reexamination and that the cited portions 4
of the Kawashima Publication do not disclose, inherently or expressly, enrichment 5
of subsets. (Sorge Motion 1, Paper 44, p.10:3-11). 6
20. In the Reexamination Grant, the Examiner stated, regarding the 7
enrichment of subsets limitation: 8
When the above method is utilized to provide mRNA gene expression 9
for monitoring, the colonies represent genes which exhibit high, 10
medium or low expression levels. Such colonies are subjected to 11
secondary colony growing as described in E (pp. 36-38), provision of 12
secondary colonies by amplification with secondary primers, pp. 64, 13
¶3. Thirdly, (step ii in figure 17b), the secondary support is used to 14
generate colonies from the mRNA or cDNA templates and after a 15
number of cycles the colonies with higher expression are regenerated 16
in more copies than lower expression and thereby the relative levels of 17
the highly expressed genes are enriched in subsets in comparison to 18
the lower expression genes, pp. 64-66, Figures 17-19. 19
20
(Reexamination Grant, Ex. 1010, p. 64). 21
22

3 Sorge requested rehearing of the Board Order (Request, Paper 19) but later
withdrew the Request. (Withdrawal of Request, Paper 170).
4 We are referring to the page numbering at the top right corner of the exhibit
and not the numbering at the bottom which is different or non-existent.
Interference 106,020

9

Claims relevant to Sorge Motion 2 1
21. Sorge moves to have its claims 3, 4, 7, 8, 10 and 15-28 designated as 2
not corresponding to Count 1. 3
22. Sorge claims 3, 4, 17 and 18 are directed to methods of the Count 4
where the enriched subsets of nucleic acid fragment are less complex that the 5
original nucleic acid sample. Claims 3 and 17 specify “at least a 5-fold less” 6
complexity and claims 4 and 18 specify “at least a 10-fold less” complexity. (‘338 7
Patent, Ex. 2008) 8
23. Sorge claims 7, 8, 21 and 22 of the ‘338 Patent depend from claim 1 9
and differ from the Count in that they require the solid supports to be beads or a 10
nylon or nitrocellulose membrane (claim 7 and 21) and in particular “agarose or 11
cellulose or paramagnetic beads” (claims 8 and 22). (‘338 Patent, Ex. 2008). 12
24. Sorge claims 10 and 24 are directed to the process of Count 1 where 13
sequence differences are identified in at least 10,000 nucleic acid fragments. (‘338 14
Patent, Ex. 2008). 15
25. Sorge claim 15 is directed to the process of Count 1 where the 16
identifying of nucleic acid sequences in step (d) includes “hybridizing, sequencing 17
primers to the bound and amplified fragments and ligating the sequencing primers 18
to oligonucleotides which are also hybridized to the bound and amplified 19
fragments”. (‘338 Patent, Ex. 2008). 20
26. Claims 16-28 depend from claim 15. (‘338 Patent, Ex. 2008). 21
22
Interference 106,020

10

Testimony 1
27. Sorge relies upon the testimony of Dr. Michael L. Metzker, Ph.D. 2
(Metzker Declaration, Ex. 2006 and Amended Metzker Declaration, Ex. 1005). 3
28. Dr. Metzker has a Bachelor of Science degree in Biochemistry & 4
Biophysics and a doctorate degree in Molecular and Human Genetics. (Metzker 5
Declaration Ex. 2006, ¶2). 6
29. Dr. Metzker has extensive experience with technology development in 7
DNA sequencing methods as discussed within his declaration testimony. (Metzker 8
Declaration, Ex. 2006, ¶¶4-6). 9
30. Based on his education, professional and research experience as 10
discussed further in his declaration testimony (Metzker Declaration, Ex. 2006, ¶¶2-11
9) and curriculum vitae (Ex. 2007), we find Dr. Metzker to be qualified to testify 12
regarding the technical subject matter involved in the interference. 13
31. Regarding the Request for Reexamination, Dr. Metzker testified, inter 14
alia, that: 15
a. he reviewed pages 64-69 of the Kawashima Publication “for 16
which Sorge mistakenly suggested ‘such that there is ‘enrichment 17
of subsets’” and that he found no evidence for the enrichment of 18
subsets in the cited pages as it relates to the Count; and 19
20
b. the examples at pages 64 and 65 would not have taught one of 21
ordinary skill in the art enrichment of subsets of fragments as the 22
goal of the mRNA gene expression monitoring method was to 23
maintain and not alter the distribution of mRNA molecules in the 24
biological sample. 25
(Metzker Declaration, Ex. 2006, ¶ 76). 26
27
Interference 106,020

11

32. Regarding its Motion 2, Dr. Metzker’s analysis focuses on the Count 1
and the Kawashima involved application as the prior art for purposes of evaluating 2
the obviousness of Sorge claims 3, 4, 7, 8, 10, and 15-28. (Metzker Deposition 3
Transcript, Ex. 1011, p.155:15-21, 157:24-158:10 (objections omitted)). 4
33. Dr. Metzker’s testimony does not contain a statement that he 5
considered all other identified relevant prior art, including prior art identified in the 6
Kawashima proposed motions list as allegedly anticipating or rendering obvious 7
the Sorge claims (Kawashima Motions List, Paper 22),5 and determined that it 8
would not have overcome the differences between the subject matter of the Count 9
and the subject matter of Sorge claims 4-6 and 13 or that the differences were not 10
merely routine or conventional in the art. 11
34. Kawashima relies upon the declaration testimony of Dr. George 12
Weinstock. (Weinstock Declaration, Ex. 1025). 13
35. Dr. Weinstock is a principal investigator, professor, and the director 14
for microbial genomics at The Jackson Laboratory for Genomic Medicine located 15
at the University of Connecticut Health Center. (Weinstock Declaration, Ex. 1025, 16
¶ 3). 17
36. Dr. Weinstock received a Bachelor’s degree in Biophysics and a 18
Ph.D. in Microbiology. (Weinstock Declaration, Ex. 1025, ¶ 4). 19

5 Consideration of whether Kawashima would be authorized to file this
motion was deferred until a time after the present motions had been decided.
(Order Authorizing Motions, Paper 26, p. 4). As a result of this decision the
involved Sorge claims will be cancelled so there is no reason to authorize a motion
attacking the patentability of these claims.
Interference 106,020

12

37. Dr. Weinstock has extensive experience working in the field of 1
genomics, including DNA sequencing, as discussed further within his declaration 2
testimony. (Weinstock Declaration, Ex. 1025, ¶ 9). 3
38. Based on his education, professional and research experience as 4
discussed further in his declaration testimony (Weinstock Declaration, Ex. 1025, 5
¶¶ 3-10) and curriculum vitae (Ex. 1014), we find Dr. Metzker to be qualified to 6
testify regarding the technical subject matter involved in the interference. 7
39. We agree with the parties that the record shows that a person of 8
ordinary skill in the art would have had a Ph.D. degree or equivalent amount of 9
education and several years of experience in the laboratory performing 10
experiments in the field of biochemistry, molecular biology, molecular genetics, or 11
a related discipline. (Sorge Motion 1, Paper 44, p. 4:2-5 and SMF 66 and 12
Kawashima Opposition 1, Paper 96, Appendix 2, p.3, responding to Sorge SMF 6). 13
III. Discussion 14
A. Sorge Motion 1 15
In its Motion 1 Sorge asserts that Kawashima should not have been accorded 16
priority benefit of its earlier filed applications PCT/GB98/0096, published as the 17
WO/98/44151(the Kawashima Publication, Ex. 2031), GB 9706528.8 (Ex. 2037), 18
GB 9706529.6 (Ex. 2038), GB 971326.9 (Ex. 2039), and GB 9713238.5 19
(Ex. 2040) (“Kawashima benefit applications”). In particular Sorge contends that 20
the Kawashima benefit applications do not provide description or enablement for 21
the limitation of the Count directed to enrichment of subsets of fragments of 22

6 Statement of material fact.
Interference 106,020

13

nucleic acids (Sorge Motion 1, Paper 44, p.5). In its Motion 1, Sorge does not 1
allege that the Kawashima benefit applications fail to support any other limitation 2
of the Count.7 Further Sorge focuses its arguments on why the Kawashima 3
Publication does not support an embodiment of the Count without specific 4
discussion of the other benefit applications. 5
To be sufficient the motion must provide a showing, supported with 6
appropriate evidence, such that, if unrebutted, would justify the relief sought. The 7
burden of proof is on Sorge as the moving party. Bd. R. 208(b). 8
In the notice declaring interference Kawashima was accorded benefit of 9
these above listed applications because the Board determined that each of the 10
Kawashima benefit applications provides a proper constructive reduction to 11
practice of the subject matter of the Count. In particular the Board determined that 12
these applications provide a described and enabled anticipation under 35 U.S.C. 13
§ 102(g) (1) of the subject matter of the Count. Bd. R. 201. 14
The Count is directed to a process of identifying a sequence difference, also 15
known as a single nucleotide polymorphism (SNP), within a nucleic acid sample as 16
compared to a reference sequence. The steps of the process comprise first 17
fragmenting the nucleic acids of the sample and then linking adapter sequences to 18
these fragments. The nucleic acid fragments are bound to a solid support and 19
amplified “whereby there is enrichment of subsets of the nucleic acid fragments.” 20
Nucleic acid sequence differences are identified by hybridizing sequencing primers 21

7 To the extent Sorge argues in its Reply 1 that other limitations are not
supported, we have not considered these arguments as they improperly raise new
issues. Bd. R. 122(b); Standing Order (Paper 2), ¶ 122.5.
Interference 106,020

14

to the bound and amplified fragments and extending the sequencing primers. 1
While Kawashima copied the Sorge claim that makes up the Count the term 2
“enrichment” appears only in the Sorge involved specification which states: 3
As used herein, the term “enrichment” or “enrichment of genetic 4
markers” refers to the result of any process which increases the 5
concentration of any particular nucleic acid sequence (genetic marker) 6
relative to some other nucleic acid sequence as compared to a sample 7
not subjected to the process. As used herein, a nucleic acid sample is 8
considered to be enriched for a particular marker if the marker is in 9
greater concentration relative to the average concentration of all 10
markers than in a sample which has not been subjected to an 11
enrichment process; for example, where the marker is present in the 12
enriched sample at a concentration 5-fold greater than in the 13
unenriched sample. 14
(‘338 Patent, Ex. 2008, 13:31-42, Kawashima request for interference, Ex. 1007, 15
p. 4 (acknowledging copying of Sorge claims)). 16
The Sorge involved specification further states that the “the term ‘subset of 17
fragments’” refers to a fraction of a population of nucleic acid fragments, less than 18
every molecule in the population, having a given characteristic. (‘338 Patent, 19
Ex. 2008, 14:4-9). 20
Thus we understand that the “whereby there is enrichment of subsets of the 21
nucleic acid fragments” limitation to refer to a method performed on a sample that 22
results in a greater concentration of a portion of nucleic acid fragments having a 23
given characteristic relative to some other portion of the population of fragments 24
when compared to a sample that was not subjected to the process. (Metzker 25
Deposition Transcript, Ex. 1011, p. 128:24–129:9; Weinstock Declaration, 26
Ex. 1025, ¶ 64). 27
Interference 106,020

15

A question before us is whether Sorge has shown that none of the methods 1
disclosed in each of the Kawashima benefit applications results in “enrichment of 2
subsets of the nucleic acid fragments”. Because we determine that Sorge has not 3
made such a showing we deny its motion without reaching the Kawashima 4
argument that the Count does not require enrichment because the Count is not 5
limited by the “whereby” clause. (Kawashima Opposition 1, p. 7). 6
In its Motion 1 Sorge asserts that the Kawashima Publication does not 7
provide a constructive reduction to practice of a method of the Count and 8
specifically the “whereby there is enrichment of subsets of nucleic acid fragments” 9
limitation of the Count. Prior to the start of this proceeding though Sorge asserted 10
to the USPTO via a Reexamination Request that the Kawashima Publication (Ex. 11
2031) discloses all the elements, and is anticipatory, of many of its claims, 12
including claim 1 that makes up the Count. (Reexamination Request, Ex. 1008, p. 13
2-3). The Examiner agreed that the “whereby there is enrichment of subsets of 14
nucleic acid fragments” limitation was found within the Kawashima Publication. 15
(Reexamination Request Grant, Ex. 1010, p.8). 16
In its Motion 1 Sorge asserts that “[a]fter review and reconsideration with 17
Dr. Metzker, Sorge is of the view that [its earlier] statements [in the Reexaminaiton 18
Request] are wrong and recants them.” Sorge now contends that “[t]he cited 19
portions of [the Kawashima Publication] do not disclose, inherently or expressly, 20
enrichment of subsets.” (Sorge Motion 1, Paper 44, p.10:3-11, citing to Metzker 21
Declaration, Ex 2006, ¶¶ 76-77). In support of its position Sorge points to 22
“Kawashima’s own words” that “[t]he ability of our invention to perform this type 23
of mRNA expression monitoring is due to the fact that when the primary colonies 24
Interference 106,020

16

are prepared, statistically, each piece of the initial genome will be represented by 1
the same number of colonies.” (Sorge Motion 1, Paper 44, p. 10:14-23 citing to 2
Metzker Declaration, Ex 2006, at ¶ 76 and Kawashima Publication, Ex. 2031, 3
p. 66). 4
One difficulty we have with the Sorge position is that, as explained in the 5
Kawashima Opposition, what Sorge refers to as “Kawashima’s own words” 6
describes only one embodiment of at least two disclosed embodiments for 7
performing mRNA expression monitoring. (Kawashima Opposition 1, Paper 96, 8
pp. 11:4-12:2 citing Weinstock Declaration, Ex 1025 at ¶¶ 70-72). The 9
Kawashima Publication states that primary colonies for use in mRNA expression 10
monitoring can be prepared from: 1) “the whole genome,” or 2) “a subset thereof 11
(e.g., from a library of previously isolated genes).” (Kawashima Publication, 12
Ex. 2031 at 64, ¶ 3). The wording Sorge relies upon addresses the “whole genome” 13
method. When read in context, “[t]he ability of our invention to perform this type 14
of mRNA expression monitoring is due to the fact that when primary colonies are 15
prepared, statistically, each piece of the initial genome will be represented by the 16
same number of colonies” is disclosed as a “feature” of the “the generation of the 17
primary DNA colony ...made from DNA of a whole genome”. (Ex. 2031 at 66, 18
¶ 3; Weinstock Declaration, Ex. 1025, ¶¶ 70-72). On cross-examination Dr. 19
Metzker acknowledged the paragraph containing the sentence relied upon by Sorge 20
does not refer to embodiments where less than the whole genome (e.g., a subset of 21
the genome) is used to generate the primary colonies. (Metzker Deposition 22
Transcript, Ex. 1012, p. 274:16-24). In its Motion 1, Sorge does not direct us to 23
detailed analysis of the methods of the Kawashima Publication where less than the 24
Interference 106,020

17

whole genome is used as was its burden. To the extent Sorge attempts to provide 1
such analysis in its Reply 2, we do not consider the Sorge arguments on this point 2
as they are belated. (Bd. R. 122(b) (“All arguments for the relief requested in the 3
motion must be made in the motion”) and Standing Order (Paper 2), ¶ 122.5 (“A 4
reply that raises a new issue will not be considered and may be returned. The 5
Board will not attempt to sort proper from improper portions of the reply.”). 6
Dr. Metzker testified that he reviewed pages 64-69 of the Kawashima 7
Publication “which Sorge mistakenly suggested” disclosed the “enrichment of 8
subsets” limitation and that he found “no evidence for the enrichment of subsets in 9
the cited pages as it relates to the Count.” (Metzker Declaration, Ex 2006, ¶¶ 76-10
77). Dr. Metzker testified that his review showed him that “secondary colonies, 11
created from primary colonies, are used to represent the distribution of mRNA 12
molecules in the biological sample” such that the mRNA expression distribution 13
would be maintained and not altered. 14
The opinions of an expert witness must disclose the underlying facts or data 15
upon which the opinion is based. Opinions expressed without disclosing the 16
underlying facts or data may be given little, or no, weight. (Bd. R. 158(a); 17
Standing Order, Paper 2, ¶ 158.1.1). Neither Sorge nor Dr. Metzker provides a 18
thorough discussion and analysis of those portions of the Kawashima disclosure 19
that Sorge earlier asserted (in the Reexamination Request) show enrichment. 20
Dr. Metzker does not provide a detailed explanation of why enrichment does not 21
occur with this method or why the Examiner’s statement that “the relative levels of 22
the highly expressed genes are enriched in subsets in comparison to the lower 23
expression genes” is incorrect. Sorge has not directed us to any detailed analysis 24
Interference 106,020

18

of the Examiner’s statement to explain why it is incorrect as was its burden. To the 1
extent Sorge attempts to provide such analysis in its Reply 2, we do not consider 2
the Sorge arguments on this point as they are belated. 3
For example Dr. Metzker does not explain to our satisfaction why the 4
mRNA expression monitoring process described at p. 64-69 of Kawashima would 5
not result in enrichment since the primary colonies are regenerated using mRNA, 6
which will be present in varying concentrations depending on expression levels, as 7
a template. As Kawashima indicates only those colonies having a corresponding 8
template nucleic acid in the mRNA sample would be regenerated so that the 9
amount of regeneration of the primary colonies will depend on the amount of 10
corresponding template nucleic acid in the mRNA sample. For those where there 11
is a higher concentration there would be enrichment of the corresponding subsets 12
of nucleic acid fragments which appears to be reflected in Figure 17(a)-(d). 13
Despite the disclosure in Kawashima that “not all colonies are regenerated at the 14
same level,” neither Sorge nor Dr. Metzker provide any detailed analysis of this 15
embodiment as reflected in Figure 17. Figure 17(d) in particular appears to show 16
enrichment of colonies of sequence “A” relative to “D” and “E” after the process, 17
as compared to before the process. (Weinstock Declaration, Ex. 1025 at ¶¶ 97-99). 18
Dr. Weinstock on the other hand provides detailed analysis of this process 19
considered in the context of the entire Kawashima Publication disclosure and the 20
prior art such that we find his testimony that “[o]ne of ordinary skill in the art 21
would have understood that Kawashima’s PCT Publication (Ex. 2031) and June 22
23, 1997 GB 9713238.5 Application (Ex. 2040) also disclose embodiments….that 23
teach ‘enrichment of subsets of the nucleic acid fragments’” to be credible. 24
Interference 106,020

19

(Weinstock Declaration, Ex 1025, ¶¶ 93-102). Where Dr. Metzker and Dr. 1
Weinstock have provided conflicting testimony regarding this process and whether 2
it teaches enrichment, we credit the testimony of Dr. Weinstock over that of Dr. 3
Metzker. 4
Sorge has not shown that the Kawashima Publication lacks support for an 5
embodiment of the Count and has not provided specific arguments regarding the 6
other benefit applications sufficient to show a lack of support for these 7
applications. Sorge not met its burden on Sorge Motion 1 to show that the 8
Kawashima benefit applications fail to provide a described and enabled 9
anticipation under 35 U.S.C. § 102(g)(1) of the subject matter of the Count. Bd. R. 10
201. Accordingly, we deny Sorge Motion 1. 11
B. Sorge Motion 2 12
In its Motion 2 Sorge moves to have its claims 3, 4, 7, 8, 10, and 15-28 13
designated as not corresponding to the Count. In support of its Motion 2 Sorge 14
relies upon the testimony of Dr. Metzker. 15
A claim corresponds to the Count if the subject matter of the Count, treated 16
as prior art to the claim, would have anticipated or rendered obvious the subject 17
matter of the claim. Bd. R. 207(b) (2). Thus to prevail in its Motion 1 Sorge must 18
address, inter alia, the scope and content of the prior art and show how this prior 19
art would not have rendered obvious Sorge claims 3, 4, 7, 8, 10, and 15-28 in view 20
of the Count.8 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 399 (2007), citing 21

8 Kawashima notes that were we to conclude that the subject matter of Sorge
claims 7 and 10 should not be designated as corresponding to the Count there
potentially could be a second interference involving this subject matter since both
Interference 106,020

20

Graham v. JohnDeere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). A showing 1
that an opposing party does not claim or describe the subject matter of the moving 2
party’s claim is not sufficient to show the claim does not correspond to the Count 3
since the claim may nevertheless have been obvious when considered in view of all 4
known prior art and the Count. 5
We recognize that proving that subject matter is not obvious may require a 6
negative proof, i.e., that no prior art in combination with the subject matter of the 7
Count could render the claimed subject matter obvious. As noted in the Standing 8
Order, a party may be able to satisfy its burden of production with testimony from 9
a knowledgeable witness certifying that the witness is unaware of any prior art that 10
would have overcome the differences between the subject matter of the Count and 11
the subject matter of the claim and that the differences were not merely routine or 12
conventional in the art. (Standing Order, Paper 2, ¶ 208.1). 13
One difficulty we have with the testimony of Dr. Metzker is that it does not 14
demonstrate to us that Dr. Metzker considered all identified relevant prior art in 15
making his determinations regarding the particular subject matter found at 16
claims 3, 4, 7, 8, 10, and 15-28. Instead Dr. Metzker’s testimony, when addressing 17
these claims, focuses primarily on the Count and the involved Kawashima 18
application as prior art. Dr. Metzker’s testimony is consistent with our observation 19
that he considered, as prior art, the Count and the involved Kawashima application 20

parties claim it (Kawashima as its claims 20 and 22). Since we do not grant Sorge
Motion 2 there is no need to consider whether a second interference would be
appropriate.

Interference 106,020

21

in coming to his opinions regarding Sorge claims 3, 4, 7, 8, 10, and 15-28. (See, 1
e.g., Metzker Deposition Transcript, Ex. 1011, p.155:15-21, p. 157:24-158:10 2
(objections omitted) stating, e.g., “…I was to look at the Count and then to look at 3
Kawashima as - - as determining whether the dependent claim elements were 4
obvious or not obvious”). 5
As we noted above a party may be able to show non obviousness through a 6
statement from a knowledgeable witness certifying that there is no known prior art 7
that would have overcome the differences between the subject matter of the Count 8
and the subject matter of the claim and that the differences were not merely routine 9
or conventional in the art. However, we were not directed to such a statement in 10
Dr. Metzker’s testimony nor to any other indication that Dr. Metzker considered all 11
known identified relevant known prior art in analyzing the obviousness of Sorge 12
claims 3, 4, 7, 8, 10, and 15-28. At the very least Dr. Metzker should have 13
considered the prior art, raised in the Kawashima proposed motions list, that 14
purportedly anticipated or rendered obvious the Sorge claims. (Kawashima 15
Motions List, Paper 22, p.1 and 2). In its Motion 1 Sorge does not direct us to 16
portions of Dr. Metzker’s testimony where he explains why, or even asserts that, 17
this art, and other known prior art, in combination with the subject matter of the 18
Count would not have rendered obvious the subject matter of claims 3, 4, 7, 8, 10, 19
and 15-28. 20
We note, and Sorge points out in its Reply 2, that Dr. Metzker provides a 21
general discussion of the “scope of content of the prior art at the time of the Sorge 22
invention” (Sorge Reply 2, Paper 168, p. 1:11-2:5) referring to Metzker 23
Declaration, Ex. 2006) and in amended declaration testimony submitted with its 24
Interference 106,020

22

Reply. (Amended Metzker Declaration, Ex. 1005).9 However, we have not been 1
directed to portions of that testimony that address the subject matter of Sorge 2
claims 3, 4, 7, 8, 10, and 15-28 in particular and indicate that Dr. Metzker 3
considered all known identified relevant prior art in reaching his opinions about 4
this subject matter. Even if we were to accept that Dr. Metzker did consider the 5
prior art cited in his general discussion in accessing Sorge claims 3, 4, 7, 8, 10, and 6
15-28, Sorge does not point out where Dr. Metzker explains how this prior art 7
would not have rendered these claims obvious. When addressing the particular 8
claims Sorge seeks to have designated as not corresponding to the Count, no prior 9
art is cited or specifically addressed by Dr. Metzker, including the references 10
Kawashima identified as potentially anticipating and rendering obvious the claims 11
of the ‘338 Patent. (Metzker Declaration, Ex. 2006, ¶¶ 65-74 and Kawashima 12
Motions List, Paper 22, pp. 1-2). Instead, as discussed further below, on cross-13
examination Dr. Metzker’s testimony indicated that the subject matter of the 14
claims it seeks to have designated as not corresponding to the Count was within the 15
knowledge and competency of one of ordinary skill in the art. (Deposition of 16
Metzker, Ex. 1011, pp.76:15-78:19; 122:16-22; 149:12-151:16; 162:1-164:22). 17

9 We understand the Amended Metzker Declaration to have been prepared in
response to objections by Kawashima that the Second Metzker Declaration (filed
as Ex. 2043 in interference 106,019) improperly incorporated by reference portions
of the Metzker Declaration prepared for interference 106,020. (Deposition of
Metzker, Ex. 1011, p. 116:17-118:17). In this decision we refer primarily to the
testimony at Exhibit 2006 when discussing the Sorge Motions since that is the
evidence cited in support of these Motions. However, it appears that Exhibit 1005
repeats testimony found within Exhibits 2006.
Interference 106,020

23

We discuss the particular claims below. 1
Claims 3, 4, 17, and 18 2
Sorge claims 3, 4, 17 and 18 are directed to methods where the enriched 3
subsets of nucleic acid fragment are less complex that the original nucleic acid 4
sample. Claims 3 and 17 specify “at least a 5-fold less” complexity and claims 17 5
and 18 specify “at least a 10-fold less” complexity. Sorge argues that the Count 6
would not have rendered obvious the achievement of 5-fold or 10-fold complexity 7
reduction since “[a]t the time of the invention, complexity reduction was not a 8
standard approach that a POSITA would have taken to increase SNR of a genomic 9
sample” and a five-fold or more complexity reduction was not taught or suggested. 10
(Sorge Motion 2, Paper 52 at 11:26-12:2 and Metzker Declaration at ¶¶ 66-67). 11
Dr. Metzker testified that before Sorge’s invention, “complexity reduction 12
used in combination with high-throughput sequence detection method, as defined 13
by Sorge, was unknown in the art” and that a practical way to practice “complexity 14
reduction for purposes of increasing SNR for high-throughput sequence detection” 15
had not been conceived. (Metzker Declaration at ¶ 67, emphasis added). 16
However, Dr. Metzker does not explain why the claimed complexity reduction 17
would not have been obvious in view of Count 1, which is not limited to “high-18
throughput sequence detection”, in view of known prior art. 19
Sorge next argues that the involved Kawashima application does not teach 20
reducing complexity, and that “the prior art,” including the Kawashima 21
application, teaches away from reducing complexity. Sorge fails to direct us to 22
prior art that would have led one skilled in the art away from the claimed 23
complexity reduction. Instead Sorge argues that since Kawashima’s involved 24
Interference 106,020

24

application does not teach enrichment then there is a teaching away from it. Even 1
if we agreed that the involved Kawashima application does not disclose 2
enrichment, Sorge has not explained how this amounts to a teaching away. See In 3
re Gurley, 27 F.3d 551, 553, (Fed. Cir. 1994) ("A reference may be said to teach 4
away when a person of ordinary skill, upon reading the reference, . . . would be led 5
in a direction divergent from the path that was taken by the applicant."). 6
Lastly Sorge points out that the Board, upon motion, designated certain 7
claims directed to complexity reduction of the parent application of its involved 8
patent as not corresponding to the Count in a separate interference, i.e., 9
Interference 105,773, Catalysts Assets, LLC v. MIT. Sorge has not explained why 10
this prior determination by the Board should control our decision here. The 11
105,733 interference involved a different Count, different claims, with different 12
evidence presented in the briefing so we are not convinced that the decision on 13
claim correspondence in that interference is relevant to the issue before us now. 14
We did not consider the Sorge argument in its Reply 2 that, even though one 15
skilled in the art was motivated to reduce complexity, no one had described 16
previously a method of quantifying complexity in the rigorous way that Sorge has 17
done because it is new argument. (Sorge Reply 2, Paper 168, p. 5:16–19). Even 18
were we to consider the argument we would not find it convincing because the 19
claims are not directed to a quantification method. 20
Claims 7, 8, 21 and 22 21
Sorge claims 7, 8, 21 and 22 of the ‘338 Patent depend from claim 1 and 22
differ from the Count in that they require the solid supports to be beads or a nylon 23
or nitrocellulose membrane (claim 7 and 21) and in particular “agarose or cellulose 24
Interference 106,020

25

or paramagnetic beads” (claims 8 and 22). (‘338 Patent, Ex. 2008). Sorge argues, 1
and we agree, that the Count does not expressly or inherently include the limitation 2
of using beads or a nylon or nitrocellulose membrane as the solid support. Sorge 3
acknowledges that “beads and nylon or nitrocellulose membranes were known 4
[solid supports] in the art”. (Sorge Motion 2, Paper 52, p. 14:2-3), 5
Sorge argues that although beads and nylon or nitrocellulose membranes 6
“were known in the art, a POSITA would not have expected to be able to 7
successfully perform the method of the Count using those solid supports,” because 8
“[s]pecifically, prior to the Sorge invention, a POSITA would have considered 9
beads and nylon or nitrocellulose membranes to be incompatible with the 10
amplification methods like those used in the ’234 application” because of 11
SNR problems. (Sorge Motion 2, Paper 52, p. 14:2-8, citing Metzker Declaration, 12
Ex. 2006, ¶¶ 61-62 and 69). We do not find this argument convincing. Sorge’s 13
argument does not address why one skilled in the art would not have considered 14
the use of these solid supports to have been obvious in view of the entire scope of 15
the Count, which includes Sorge claim 1, but instead only refers to methods “like 16
those used” in the involved Kawashima application. 17
We agree with Dr. Metzker’s testimony (Ex. 2006, ¶ 69) that the Count did 18
not present a person of ordinary skill in the art with “a finite and discrete number 19
of choices” for solid supports, but this statement does not amount to an explanation 20
of why selecting known supports would not have been obvious. Dr. Metzker’s 21
testimony that “using any particular solid support would not have yielded 22
predictable results” is not supported by underlying facts or data other than the 23
contention that the involved Kawashima application does not disclose using these 24
Interference 106,020

26

same solid supports. (Metzker Declaration, Ex. 2006, ¶¶ 69 and 70) As we stated 1
above this is not the correct standard for evaluating claim correspondence. 2
Further Dr. Metzker’s cross-examination testimony indicates that one of 3
skill in the art reading Kawashima’s disclosure would have understood that they 4
could use, e.g., agarose beads in Kawashima’s method. Dr. Metzker testified that 5
beads and nylon or nitrocellulose membranes are compatible with the Count, and 6
are within the ordinary competency of one of skill in the art to implement in view 7
of the Count. (Deposition of Metzker, Ex. 1011, pp. 149:12-150:18 (objections 8
omitted; Second Metzker Deposition, Ex. 1012, p. 241:3-23, p. 239:22-242:22, 9
stating, e.g., one skilled in the art “would know how to bind nucleic acids that have 10
adapters ligated to the ends of those fragments to amplify on a solid support” such 11
as agarose beads). In its Reply 2, Sorge does not address or dispute this testimony 12
by Dr. Metzker or otherwise reply to Kawashima’s specific arguments regarding 13
Sorge claims 7, 8, 21 and 22. 14
Sorge has not met its burden to show why claims 7, 8, 21 and 22 should be 15
designated as not corresponding to the Count. 16
Claims 10 and 24 17
Claims 10 and 24 require sequence differences that are identified in at least 18
10,000 fragments. 19
The testimony that Sorge directs us to regarding claims 10 and 24 (Metzker 20
Declaration, Ex. 2006, ¶ 71) does not mention any prior art other than the 21
Kawashima involved application. Dr. Metzker concedes that this Kawashima 22
application contains disclosure of a method of sequencing “up to 1,000,000 23
fragments simultaneously” but implies, without further explanation, that 24
Interference 106,020

27

Kawashima did not enable such a method. Dr. Metzker’s testimony regarding 1
claims 10 and 24 also does not address this same disclosure as it appears in the 2
Kawashima Publication (Kawashima Publication, Ex. 2031, p. 50). 3
Sorge argues that one skilled in the art would not have had a reasonable 4
expectation that sequence differences could have been identified in more than 5
10,000 nucleic acid fragments because the SNR prevented distinguishing signals 6
from thousands of fragments. (Sorge Motion 2, Paper 52, p. 15:1-11). In support 7
of this argument Sorge directs us to the testimony of Dr. Metzker who asserts that 8
the involved Kawashima specification fails to enable sequencing up to 1,000,000 9
fragments simultaneously using bridge amplification. (Metzker Declaration, 10
Ex. 2006, ¶ 71). 11
We note also that claims 10 and 24 do not require identifying the sequence 12
differences “simultaneously” or by using “bridge amplification” as Dr. Metzker’s 13
testimony suggests. Further the testimony pointed out to us regarding claims 10 14
and 24 does not provide sufficient basis, such as a full discussion of the identified 15
relevant prior art, for Dr. Metzker’s opinion that one skilled in the art would not 16
have found it obvious to perform the process of the Count in a way to allow for 17
identification of sequence differences “in at least 10,000 nucleic acid fragments.” 18
While Dr. Metzker testified that “neither Kawashima nor anyone else was able to 19
detect signal from tens of thousands of colonies”, we have not been directed to 20
testimony or other evidence explaining why the known prior art, including the 21
Interference 106,020

28

Count which is not limited to any particular amplification method,10 would not 1
have rendered obvious a method that allow for identification of sequence 2
differences in at least 10,000 nucleic acid fragments. (Metzker Declaration, 3
Ex. 2006, ¶ 71). 4
In his cross examination testimony Dr. Metzker seemed to concede that prior 5
art methods were known that would allow for identification of sequence 6
differences in at least 10,000 nucleic acid fragments. (Deposition of Metzker, 7
Ex. 1011, p. 164:3-22.). In its Reply 2 Sorge takes issue with the testimony of Dr. 8
Weinstock regarding certain prior art references. (Sorge Reply 2, Paper 168, p. 9
9:20-10:8). We do not rely upon that testimony in coming to our decision on 10
claims 10 and 24. 11
Sorge has not met its burden of showing that claims 10 and 24 should be 12
designated as not corresponding to the Count. 13
Claims 15-28 14
Claim 15 is directed to a method of the Count that requires identifying 15
sequence differences “by hybridizing sequencing primers to the bound and 16
amplified fragments and ligating these primers to oligonucleotides which are also 17
hybridized to the bound and amplified fragments.” Sorge argues that since 18
claim 15 should not correspond to the Count then dependent claims 16-28 also 19

10 Dr. Metzker testified that the involved Kawashima application focuses on
the bridge amplification method of amplifying a nucleic acid sample on a solid
support to create “colonies” comprising multiple copies of the same nucleic acid
sequence in different sections of the solid support but the Count is not limited to
this method. (Metzker Declaration, Ex. 2006, ¶ 24)
Interference 106,020

29

should not correspond. (Sorge Motion 2, Paper 52, p. 16:10-11). 1
Sorge argues, relying upon the declaration testimony of Dr. Metzker, that 2
claim 15 would not have been obvious over the Count since ligation-based 3
sequencing, a limitation “which Kawashima has not copied, is ‘an entirely separate 4
invention.’” (Sorge Motion 2, Paper 52, p. 16:12-13, citing Metzker Declaration, 5
Ex. 2006, ¶ 73). Dr. Metzker testified that one skilled in the art “would not have 6
been able to simply substitute the polymerase-based approach of the Count with a 7
ligase-based approach.” (Metzker Declaration, Ex. 2006, ¶ 73). However, 8
Dr. Metzker does not explain why the Count is limited to a polymerase based 9
approach. The ‘338 Patent specification itself indicates that any known method of 10
sequence detection is compatible with the invention, including both polymerase- 11
and ligase-based methods. (‘338 Patent, Ex. 2008 at 24:35-28:35, 37:30-67)). 12
Dr. Metzker’s testimony only addresses the compatibility of ligation-based 13
sequencing with the bridge amplification methods disclosed in the involved 14
Kawashima application without addressing what the known prior art would have 15
suggested to one skilled in the art when considered with the Count which is not 16
limited to a particular type of sequencing method. (Metzker Declaration, Ex. 2006 17
at ¶ 73). The question before us is not whether the Kawashima application 18
discloses the subject matter of Sorge claim 15 but whether one skilled in the art 19
considering the Count and all identified relevant prior art would have arrived at the 20
subject matter of Sorge claim 15. On cross-examination Dr. Metzker testified that 21
the use of known ligase-based detection methods such as the known 22
Oligonucleotide Ligation Assay (OLA) was within the competency of a skilled 23
artisan at the time of the invention. (Metzker Deposition Transcript, Ex. 1011 at 24
Interference 106,020

30

76:15-77:10; 164:3-22-28). In its Reply 2, Sorge does not address or dispute this 1
testimony by Dr. Metzker or otherwise reply to Kawashima’s specific arguments 2
regarding Sorge claim 15. 3
Sorge has not met its burden of showing that claims 15-28 should be 4
designated as not corresponding to the Count. 5
C. Motion to Exclude 6
Sorge moves that the Board exclude from evidence the certain portions of 7
the Declaration testimony of Dr. George M. Weinstock (Ex. 1025), exhibits that 8
are said to have been cited in Dr. Weinstock’s testimony but not in the Kawashima 9
Opposition, and a letter said to be from the owner of the patent involved in 10
interference 106,020, Catalyst Assets, regarding licensing the claimed technology 11
(Ex. 1006). 12
The declaration of Dr. Weinstock (Weinstock Declaration, Ex. 1025) is a 13
single declaration prepared for use, and filed in, both interferences 106,019 and 14
106,020. We did not find it necessary to rely upon the Weinstock Declaration in 15
making our determination in this interference that Sorge did not meet its burden of 16
proof on Sorge Motion 2. Further we did not rely on the other evidence Sorge 17
seeks to exclude in deciding either Sorge Motion 1 or Sorge Motion 2. 18
We therefore DISMISS as moot the Sorge Motion to Exclude. 19
D. Priority 20
The Sorge motion attacking the Kawashima accorded benefit is denied. The 21
parties agreed that the motion attacking benefit is dispositive on the issue of 22
priority. (Order Authorizing Motions, Paper 26, p. 3). 23
The earliest conception date alleged by Sorge in its priority statement is after 24
Interference 106,020

31

Kawashima’s earliest accorded benefit. (Sorge Priority Statement, Paper 50, p.1). 1
Sorge therefore cannot prevail on priority. Cooper v. Goldfarb, 154 F.3d 1321, 2
1327 (Fed. Cir. 1998) (Priority of invention goes to the first party to reduce to 3
practice an invention of the Count unless the other party can show that it was the 4
first to conceive the invention and that it exercised reasonable diligence in later 5
reducing to practice that invention.); See also Bd. R. 204(a). 6
Judgment on priority will be entered against Sorge in a separate paper. 7
IV. Order 8
It is 9
ORDERED that Sorge Motion 1 is DENIED, 10
FURTHER ORDERED that Sorge Motion 2 is DENIED; 11
FURTHER ORDERED that Sorge Motion 3 is DISMISSED as moot; and 12
FURTHER ORDERED that judgment on priority against Sorge shall be 13
entered in a separate paper. 14

Interference 106,020

32

Attorney for Sorge:

Daniel A. Lev
dlev@pierceatwood.com

Gary A. Walpert
gwalpert@pierceatwood.com

Attorney for Kawashima:

Brenton R. Babcock
2brb@knobbe.com

Brendon Gingrich
2bsg@knobbe.com

David P. Kujawa
2dpk@knobbe.com
boxILM@knobbe.com

Edward R. Reines
Edward.reines@weil.com